Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments and amendment have persuasively overcome the
The remaining issues are addressed below.
Specification objection
Applicant argues:
The Specification was objected to based on an alleged minor informality.
Examiner responds:
The objection goes to ownership rights.
Applicant argues:
However, based on a diligent review of the Applicant's records, the instant application was not developed under any Government grant, contract, or award.
Examiner responds:
Applicant’s statement is insufficient to be persuasive. If Applicant submits these records in an Information Disclosure Statement, the examiner will consider them. The examiner believes that these records relate to the written description requirement because the development of the instant technology is at issue for both this specification objection and also the public use on sale bar rejection (e.g., is this invention distinct from what was earlier developed).
Applicant argues:
As no Government funding was involved in the development of the claimed invention, …
Examiner responds:
This is a sweeping statement. In contrast, Applicant’s remarks regarding the prior art suggest that the NSF abstract teaches some of the currently claimed elements, and that Applicant’s asserted differences over the NSF abstract appear to be technological advances (i.e., the current invention is based on the development from the NSF abstract),
Prior Art
Applicant argues:
… nor does the Office Action so allege.
Examiner responds:
The Office Action alleged that the entirety of the invention is in the prior art (hence why the claims were not mapped)
Applicant argues:
The above cited references do not disclose, depict, or suggest any intermediate step between extracting pixel data and having the desired qualitative attribute. Further, the above cited references disclose no comparison of pixel data to a database or any reference set. Moreover, the above cited references identify no "determine-what-to-measure" step based on pixel data extraction.
Examiner responds:
[The examiner believes that Applicant’s reference to a “qualitative attribute” is a typo for “quantitative attribute” because the language otherwise tracks the claim]
Applicant does not challenge that the prior art teaches “frame counters.” Compare remarks at 11 with the lack of a specific denial on pg. 12. The frame counter’s counting is one example of a comparison (i.e., the term “comparison” is broad enough to encompass simply tallying up the number of frames), and that it is of frames teaches the claimed pixel data. The count is also a quantitative attribute. Additionally, Applicant does not challenge that the prior art teaches “ruler overlays.” Compare remarks at 11 with the lack of a specific denial on pg. 12. Here, placing the ruler on the screen – the overlay – teaches the claimed comparison. The values shown on the ruler are quantitative attributes.
Applicant argues:
Moreover, the above cited references identify no "determine-what-to-measure" step based on pixel data extraction.
Examiner responds:
It appears that Applicant is trying to claim that the video also stores the answer to a science problem, and that the video (and related software) can score whether the student gets the correct answer. However, the claim literally reads on any quantitative attribute/property, not just the answer to a science question.
The examiner reminds Applicant that non-functional descriptive material (such as the answer to a science question) is not awarded patentable weight. MPEP 2111.05.
Applicant argues:
The above cited references, instead, have the user determine what qualitative attribute is to be directly measured.
Examiner responds:
The examiner believes that “qualitative” is a typo for “quantitative” because Applicant discusses measurement (and the art shows a ruler).
Applicant argues:
Assertions grounded solely in material-level disclosures cannot substitute for the missing article-level structural elements.
Examiner responds:
Applicant is reminded that the aspects of the prior art that are hidden are still available as prior art. See the previous Office Action pp. 13-14, where the burden is shifted to Applicant to show differences over their earlier disclosures.
Specification
As per MPEP 310, the specification is objected to for not including the statement:
"This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention."
The present application appears to have been supported by National Science Foundation Award #1245268, as retrieved from https://www.nsf.gov/awardsearch/showAward?AWD_ID=1245268&HistoricalAwards=false. The award was titled “Video Bridge: Using short direct-measurement videos to bridge the gap between abstracted physics concepts and their applications” and the principal investigator (and one of the co-principal investigators) are listed as inventors on the current application.
The present application appears to have also been supported by National Science Foundation Award #1644458, as retrieved from https://www.nsf.gov/awardsearch/showAward?AWD_ID=1644458&HistoricalAwards=false#2. The award was titled “Pivot Interactives,” the principal investigator and the co-principal investigator are listed as inventors on the current application and the primary place of performance was Pivot Interactives SBC.
Prof. Vonk’s website at the University of Wisconsin River Falls (i.e., https://www.uwrf.edu/FacultyStaff/5608386.cfm) states:
Dr. Vonk received several NSF (National Science Foundation) grants for his work on interactive video, has published articles on a wide variety of topics (education, erosion pillars, water jetpacks, asteroid rotation, the ascendance of video, and even an essay on what it's like to teach physics in the digital age) and has presented scholarly talks at more than thirty venues.
Claim Interpretation
Claims 7-10 and 16 recite what the extracted pixel data includes. However, what the extracted pixel data includes only matters for the meaning to the human reader, the underlying processing is unaffected. MPEP 2111.05(III).
Claims 7-10, 15 and 20 recite what the quantitative attribute includes or comprises. As with the extracted pixel data, this distinction only matters to the human reader, the underlying processing is unaffected. MPEP 2111.05(III).
Because each of these elements are directed to non-functional descriptive material, none are entitled to patentable weight. MPEP 2111.05.
Claims 13 and 14 recite “to determine,” but this is interpreted as intended use. MPEP 2114(II).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “extracting pixel data from the selected portion of the video comprising the object,” but the claim does not recite that the computer knows what the object is. A review of the specification has not identified support for extracting pixel data comprising an object without having identified the object, and thus the inventors have not shown possession. MPEP 2163(II)(A)(3)(a)(ii), discussing Lizardtech.
Similarly, claim 11 recites “determine, based on the extracted pixel data, information of the quantitative attribute of the object,” and this raises the same issue.
Claim 19 recites “determine, based on the second extracted pixel data, second information of a second quantitative attribute of the object” that also raises the same issue.
Claim 1 recites “determining, via the processor, the quantitative attribute to be measured based on the comparison,” but this is claiming a result rather than a step because of the wide variety of possible attributes, comparisons, and ways to choose an attribute given a comparison. MPEP 2173.05(g).
Claim 1 recites “determining, via the processor, a measurement of the quantitative attribute of the object based on the extracted pixel data,” but this is claiming a result rather than a step. MPEP 2173.05(g) explains “Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. … Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph.”
Similarly, claim 11 recites “determine, based on the extracted pixel data, information of the quantitative attribute of the object,” and this raises the same issue.
Claim 19 recites “determine, based on the second extracted pixel data, second information of a second quantitative attribute of the object” that also raises the same issue.
Dependent claims are likewise rejected.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “selecting a portion of the video.” The specification discloses this as performed by a human, see, e.g., specification [0027] and [0032]. However, the preamble recites that this is a computer-implemented method, suggesting that the computer performs the claimed selecting rather than the user. This conflict creates indefiniteness.
Claim 1 recites “the selected portion of the video comprising the object,” but this lack sufficient antecedent basis because the earlier recitation of “selected portion of the video” did not specify that it comprised the objected, rather, only the received image data is recited as comprising the object.
Further, it is not clear if the selected “portion” is limited to a single frame. On the one hand, the plain meaning of “portion of the video” includes a series of frames (e.g., 7 seconds), but claim 1 recites that the processor has only received “image data” (understood as a single frame) and claim 4 is explicit that the portion of the video is within an image frame. Similarly, the specification appears to use portion of the video interchangeably with portion of the image. See, e.g., [0041] “desired portion (e.g., frame) of the video.”
Claims 1 and 11 recite “quantitative properties” and already recited “quantitative attributes.” It is not clear what difference, if any, is intended.
Claims 1 and 11 recite “pixel information” and already recited “pixel data.” First, it is unclear what difference, if any, is intended between “data” and “information.” The specification does not clarify the difference between these terms. See, for example, [0025] “comparing the extracted pixel data to a database of pixel information” and [0039] “The extracted pixel data may be any of one or more of the RGB colors, grey scale value, contrast, or other pixel information.” Second, it is not clear if pixel information is limited to information about the pixel directly, such as the color shown, the location on the screen, the timing of appearance, or if it also includes information about the pixel at a higher level, such as the meaning of the pixel to the user.
Claims 1 and 11 recite “compar[ison of] the extracted pixel data to a database of pixel information,” but it is not clear what it means to compare data to a database. For example, if data is retrieved from a database, is that a comparison because the computer determined that the returned data is the same as what is in the database?
Claims 1 and 11 recite “pixel information correlating to one or more quantitative properties,” but this is unclear because the pixel information is itself a quantitative property.
Claim 1 recites “determining, via the processor, the quantitative attribute to be measured.” It is not clear if this is intended to mean determining which attribute, or the value of the attribute.
Claim 2 recites “wherein the measurement of the quantitative attribute of the object is determined based on a correlation function.” First, because the correlation function is not defined, there is no guidance to determine if a given measurement is based on a correlation function or not. Second, it is not clear if the role of the “correlation function” is to redefine what a ”measurement” is or to constrain “measurement” to only be a correlation (but it’s also unclear what type of measurement is not a correlation to begin with).
Claim 18 recites corresponding language and is similarly rejected.
Claims 2 recites “a correlation function based on correlation data.” Because neither the correlation function nor the correlation data are defined (or identified), it is not clear how to determine if a correlation function is “based on” correlation data or not. It’s not clear if “based on” means that at least some of the correlation data is used as an input, or if the correlation data defines the correlation function, or something else.
Claim 2 recites “correlation data between a plurality of pixel data points and a plurality of quantitative attribute values.” Because neither the pixels nor the values are defined or identified, it is not clear how to know whether the correlation data correlates them or not.
Claim 3 recites corresponding language and is similarly rejected.
Claim 5 recites “receiving a third user input of the object's quantitative attribute to be determined,” but this conflicts with grandparent claim 1’s recitation that the processor determines the quantitative attribute and the preamble’s “computer-implemented method.”
Claim 12 recites “determined,” but this is a subjective term. MPEP 2173.05(b)(IV).
Claim 17 recites “is determined based on a relational database,” but it is not clear how to determine if a determination is “based on” a relational database or not (particularly as the claim has not identified which relational database is at issue).
Claim 18 recites corresponding language (i.e., “based on a correlation function”) and is similarly rejected.
Claim 17 recites “a correlation of RGB color data to the quantitative attribute,” but the claimed correlation is subjective. MPEP 2173.05(b)(IV). Additionally, the claimed quantitative attribute is not limited to being something that can be correlated to RGB color data.
Claim 18 recites corresponding language and is similarly rejected.
Dependent claims are likewise rejected.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (mental process) without significantly more.
Step 1: Claim 1 (and its dependents) recite a method, and processes are eligible subject matter.
Claim 11 (and its dependents) recite a non-transitory computer readable-medium, and manufactures are eligible subject matter.
Step 2A, prong one: All of the elements of claims 1-20 are a mental process because a person watch a video and measure what’s happening. MPEP 2106.04(a)(2)(III)(C) explains that use of a generic computer or in a computer environment is still a mental process. In particular, this section begins by citing Gottschalk v. Benson, 409 US 63 (1972). “The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea.” In Benson the Supreme Court did not separately analyze the computer hardware at issue; the specifics of what hardware was claimed is only included in an appendix to the decision. Here, items such as the video, the processor, memory and so forth are generic computer components.
Because there are no additional elements, no further analysis is required for Step 2A, prong two or Step 2B.
Examiner Note
The public use prior art was widely known enough to qualify as evidence that demonstrates the well-understood, routine, conventional nature of the technology at issue. MPEP 2106.07(a)(III).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention.
Overview
Pivot Interactives’ direct measurement videos have been in public use and on sale since more than a year before the earliest asserted priority date, and are at least substantially identical to the present invention. Note that Discovery Education (the assignee) owns Pivot Interactives, see https://www.discoveryeducation.com/solutions/science/pivot-interactives/ and https://www.discoveryeducation.com/details/clearlake-capital-backed-discovery-education-acquires-pivot-interactives/. In an interview, Applicant’s representative acknowledged the similarity between the present invention and the direct measurement videos.
The analysis proceeds in four parts. First is a listing of evidence. Second is a comparison between the disclosed invention and the direct measurement videos. Third is an analysis of the public availability. Fourth is the conclusions.
Evidence regarding Direct Measurement Videos:
NSF Grant
National Science Foundation Award Abstract # 1245268, retrieved from https://www.nsf.gov/awardsearch/showAward?AWD_ID=1245268&HistoricalAwards=false#2
Physics Paper
Vonk M, Bohacek P, Militello C, Iverson E. Developing model-making and model-breaking skills using direct measurement video-based activities. Physical Review Physics Education Research. 2017 Dec 1;13(2):020106.
The examiner believes that this paper was referenced in the NSF Grant with “We submitted an article to Physical Review PER this summer. We are currently revising it for resubmission.”
Compadre website
“Pivot Interactives,” The Physics Source for Introductory Physics Courses, Peter Bohacek, February 9, 2013, retrieved from https://www.compadre.org/IntroPhys/items/detail.cfm?ID=13720.
SERC website
“Direct Measurement Videos: Extracting Data from Video Clips” Peter Bohacek, April 27, 2017 as crawled by archive.org, retrieved from https://web.archive.org/web/20170427100825/https://serc.carleton.edu/sp/library/teachingwdata/video.html.
About page
“About,” Pivot Interactives, retrieved from https://www.pivotinteractives.com/about/. Based on image searches, the examiner believes that the crouching man in a blue shirt is Mike Vonk and that the man in the upper right corner is Peter Bohacek (both are inventors).
Purchase page
“Purchase,” Pivot Interactives, December 18, 2020 as crawled by archive.org, retrieved from https://web.archive.org/web/20201218192810/www.pivotinteractives.com/purchase.
The interview summary (attached) is also relied on.
Comparison between the disclosed invention and direct measurement videos
The present invention is directed to measuring quantitative attributes in videos through a web browser. (Title.)
The Compadre website states “These high-resolution short videos feature tools that allow students to easily analyze physical situations encountered in introductory mechanics courses.” The examiner accessed these videos with a web browser.
The SERC website states “Direct Measurement videos show situations that students can use to learn and apply physics concepts. Grids, rulers, and frame-counters are added as overlays on the video. These allow students to make precise measurements of quantities such as position and time.” The examiner accessed these videos with a web browser.
Specification, [0005] explains that with the prior art “There is no conversion to a quantitative value provided with these systems.”
The Compadre website states “Features include grid and ruler overlays, frame-counters, and other screen overlays for making precise measurements.”
The SERC website states “Direct Measurement videos show situations that students can use to learn and apply physics concepts. Grids, rulers, and frame-counters are added as overlays on the video. These allow students to make precise measurements of quantities such as position and time.”
Specification, [0017] states “Example aspects described herein are directed at systems and methods for measurement of quantitative attributes in videos through a web browser that may include video quantitative color measurement tools for online video.”
The NSF grant shows:
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Comparing the efficiency of the lightbulbs teaches a quantitative color measurement tool.
Specification [0024] states “Example aspects of the system and methods for determining quantitative properties of objects within image files described herein comprise extracting pixel values from regions of interest in a video frame and converting these values to physical quantities using calibration data that relate the physical quantities to the response of the sensor used to capture the video, as described in greater detail herein.”
The Physics paper shows:
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Though hard to see in this reproduction, near the student’s knee is a red ruler overlaid to measure the height of the amplitude.
As per the interview summary, on June 25, 2025 the examiner spoke with Applicant’s representative and asked how the current application differed from Applicant’s direct measurement videos. After researching the issue, Applicant’s representative spoke with the examiner on June 26, 2025 and said that the direct measurement videos use frame rate to make determinations, but the present claims use pixel data. The examiner’s review of the Compadre site, the NSF grant and the Physics paper all show using pixel data, and that the “direct measurements” are of pixels in videos (e.g., where the light is, or how far an object moves). More specifically, while the SERC website discusses using frame rate, it also describes using pixel data (e.g., one can track the ball because the ball is a different color than the background).
Public Availability
The NSF grant states “This spring two of the PI’s from the TUES award founded a company, PIVOT INTERACTIVES SBC, with the goal of making the project self-supporting in the long term. The company is currently in contract negotiations with major players in the field of science education.” This shows both that Pivot Interactives’ product is the direct measurement videos and that the videos were on sale (the contract negotiations and the company looking to be self supporting are each evidence of being on sale).
Similarly, Pivot Interactives’ About page describes the product as “direct measurement videos.”
Pivot Interactives’ videos have been on sale since not later than December 18, 2020.
Additionally, the research in the Physics paper is directed to how to educate students (i.e., the technology in the direct measurement videos was completed and ready to be evaluated). As the Physics paper wrote in 2017, “DMVs are available on demand to any student with an internet enabled device.” The paper also states “You may use this online resource for free at the link in Ref. [35].” Ref. [35] was (and continues to be) a publicly accessible link and the referenced “resource” is the direct measurement video shown in Fig. 1, depicted above. The Compadre website also shows that the videos were available.
Conclusions
The Physics paper states that the technology was both in use and available to the public more than one year before the earliest asserted priority date. Further, Pivot Interactives was selling the product more than one year before the earliest asserted priority date.
MPEP 2133.03(a)(II)(A)(2) is titled “Even If the Invention Is Hidden, Inventor Who Puts Machine or Article Embodying the Invention in Public View Is Barred from Obtaining a Patent as the Invention Is in Public Use.” Here, the direct measurement videos were in public use (both actually and via commercial exploitation (MPEP 2133.03(a)(I)), and thus even aspects of the invention that are hidden are also available as prior art.
The direct measurement videos have been both on sale and in public use for more than one year before the earliest asserted priority date. To the extent that there are differences between the public disclosures and the claims, any differences are inherent (e.g., are disclosed by secret prior art).
The above Comparison between the disclosed invention and direct measurement videos shows that the direct measurement videos are at least substantially identical to the currently claimed invention. Therefore, the burden of production shifts to Applicant. MPEP 2112(V).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID ORANGE whose telephone number is (571)270-1799. The examiner can normally be reached Mon-Fri, 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gregory Morse can be reached at 571-272-3838. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID ORANGE/Primary Examiner, Art Unit 2663